Safaricom drawn into dispute between solar firm and trader over M-Kopa name

US President Barack Obama when he visited the M-Kopa stand at the Power Africa Innovation Fair last year on the sidelines of the Global Entrepreneurship Summit in Nairobi. M-Kopa and an import-export firm are claiming exclusive rights to the trade name. PHOTO | AFP

Safaricom has been sucked into a dispute between pay-per-use solar energy provider M-Kopa and an import-export firm claiming exclusive rights to the trade name.

Mkopa Investments has sued Safaricom, M-Kopa Solar and its parent firm Mobile Ventures Kenya Limited, claiming the firms have infringed on the trade name it has owned since December 1997.

The businessman also wants Safaricom and M-Kopa to pay him all profits they have made by using the disputed name in the course of business.

Safaricom and M-Kopa Solar have both denied any infringement of Mr Kamau’s business. Safaricom in its filings reveals that it has made Sh314 million between 2012 and 2014 from its partnership with Mobile Ventures Kenya in the M-Kopa Solar project.

“The name M-Kopa Solar is strikingly similar to Mkopa which is the name I had registered as a business name and the moment the defendants started advertising a product under a name similar to mine, I received a lot of enquiries from my customers both locally and abroad. Despite demand and a notice of intention to sue, the defendants have refused to cease the infringement,” says Mr Kamau in the court filings.

Safaricom in its response says Mr Kamau’s company did not raise an objection when Mobile Ventures registered M-Kopa Solar as a trademark, and that the businessman is simply trying to cash in on the multi-million shilling solar energy business.

Mr Kamau says the alleged infringement on his business name has caused him untold losses as it has curtailed business opportunities he had planned to run beyond 2030.

But Safaricom says it is not in the same line of business with Mkopa Investments, which deals in import and export of leather, macadamia and groundnuts and that it has never passed itself off as Mr Kamau’s firm.

“There has never been any claim whatsoever by Mkopa Investments to M-Kopa Solar’s entitlement to its registered trademark. This suit is an attempt by Mkopa Investments to unjustly enrich itself from Safaricom and M-Kopa Solar’s concept and business and to deprive Safaricom of an estimated income of Sh314 million,” says Mark Lavi, Safaricom’s in-house legal counsel.

Mr Kamau’s company also wants Safaricom and M-Kopa Solar to issue a public apology for infringement accompanied by a declaration that they will stop using the disputed name.

M-Kopa Solar insists that it followed the law to the letter when registering its name as a trademark. The solar energy provider adds that it sent a cease and desist letter to Mkopa Investments in 2012 after registering the M-Kopa Solar trademark.

“The registrar of companies had no concerns over the use of the name by M-Kopa Solar and proceeded to accept it. The claim should be dismissed with punitive costs against Mkopa Investments for wasting the court’s time,” says Pauline Githugu, M-Kopa Solar’s director for legal affairs.

The energy provider adds in court papers that it has sold over 158,000 solar units in Kenya, which have benefited more than one million people, and that it plans to expand its reach to 800,000 homes in 2016.